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ZeniMax Media publishes a series of role-playing games called The Elder Scrolls, developed by Bethesda Software; the fifth such game, Skyrim, will be released this November. Mojang, the indie studio behind Minecraft, is currently developing a collectible card-style game called Scrolls. Confused by the similarity between "The Elder Scrolls" and "Scrolls"? No? Well, ZeniMax believes that you and other consumers might just be. It has filed a lawsuit against Mojang, claiming that the developer has infringed upon The Elder Scrolls trademark.

What's going on

Last week, Minecraft creator and Mojang founder Markus "Notch" Persson announced on Twitter that he had received a document from lawyers working for Zenimax Media which claimed that Scrolls infringed upon The Elder Scrolls trademark. He then posted an image of the document, reportedly 15 pages in length. According to Persson, prior to that document, ZeniMax's lawyers had contacted his studio regarding the same issue. All of this happened after Mojang had itself filed for an application to trademark the name Scrolls.

"We looked things up and realized they didn't have much of a case, but we still took it seriously," he wrote in a blog post. "Nothing about Scrolls is meant to in any way derive from or allude to their games. We suggested a compromise where we’d agree to never put any words in front of 'Scrolls', and instead call sequels and other things something along the lines of 'Scrolls - The Banana Expansion'. I'm not sure if they ever got back to us with a reply to this."

Since Mojang is based in Sweden, the document itself is in Swedish, and thus we can't gather much from it. However, Persson explained that, in brief, the document says that "they demand us to stop using the name Scrolls, that they will sue us (and have already paid the fee to the Swedish court), and that they demand a pile of money up front before the legal process has even started."

"Under US law there are a couple of additional grounds (tarnishment and dilution) for famous marks, but whether the Elder Scrolls series falls within the parameters is difficult to see without conclusive market studies," she added. "So at the end of the day, Bethesda would have to spend a considerable amount to push this through litigation as far as collecting evidence to show either tarnishment or likelihood of confusion."

Of course, the lawsuit is being filed under Swedish law, and as Ibrahim explained, "the benchmarks and barriers as to trademark protection differ from country to country." Still, ZeniMax would have to prove that there is a likelihood of confusion between the two games, which could be difficult to do.

This is primarily due to the fact that neither game has been released, and so the only way to prove such confusion would be to produce convincing market research. This would definitely be the case in the US; however, according to Ibrahim, "the same principles may generally apply due to international IP treaties."

Character art from Scrolls

The situation is similar under English law, as London-based lawyer Jas Purewal, author of the Gamer/Law blog, points out.

"Owning a trademark doesn't give you exclusive ownership of the thing that's been trademarked, whether it's a name, a logo, a smell (yes, you can trademark one)," he wrote. "It gives you the right to stop another guy if: a) he is selling identical or similar goods/services in an identical/similar business, and b) there is a likelihood of public confusion between the two goods/services.

"This is the position under English law, which is broadly similar to European laws generally—including the Swedish law to which Mojang is subject—but there may be some differences I'm not aware of."

What's next

Persson and Mojang have already made the right first move by making the issue public. No matter if it's right or wrong, this is bad PR for Bethesda, the developer of the Elder Scrolls series. For all of the success of Minecraft, Mojang is still substantially smaller than ZeniMax or any of its development houses, and picking on the little guy is never a good look.

But if PR fails, Mojang could always fall back on geography. "Another option is filing a declaratory judgment in the States to make sure the US has jurisdiction over the matter," said Ibrahim. "If Bethesda doesn't have a US trademark for the Elder Scrolls registered they'd almost certainly be limited to injunctive relief, and that'd be after protracted litigation."

As for Persson, he doesn't blame Bethesda's developers, tweeting last week, "Again, to be clear, the devs at Bethesda are cool people! This is their lawyers. They're a very big company now."

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166 Reader Comments

I got a similar letter last year. I was selling t-shirts for a football team fan club, and my shirt said "Black Out the 'Blatt". The owner of the Rosenblatt Stadium trademark (the City of Omaha) threatened to sue me for violating their trademark.

I called up their lawyer and said a trademark doesn't cover similar words and all variations of words. I said they didn't have a trademark on "the 'Blatt" and that they didn't have a case. The lawyer said I was right, and dropped it right there.

Just because you get a threatening letter doesn't mean you have to back down, or that you're in the wrong.

Bethesda doesn't have a trademark on the word "Scrolls" by itself. They shouldn't have a case here.

Well, I guess you will never see a video short/movie/series of the elder scrolls then. Certainly "Ninja Scroll" would have to bring up the use of scrolls in video being a trademark violation. Stupid for bethesda, Smart for bethesda lawyers (who get more work when stuff like this makes trademark issues worse).

And how many casual fans even know the series title is "The Elder Scrolls"? Several people I've talked to only know the games by Morrowind, Oblivion, Skyrim, etc.

They'd have a hard time proving that "Scrolls" is being confused with Bethesda's products when many probably don't even associate that word with their games.

I agree. The only time I get confused about Bethesda's products, is when I remember they are all called "The Elder Scrolls"...a name that means virtually nothing to me. I mean, it's not even a good supertitle.. Are there any significant "scrolls" that even occur in the game? At least Star Wars is a war that takes place (often) in the Stars.. Lord of the Rings actually involves Lords and some highly significant Rings.. But does Elder Scrolls prominently feature any scrolls or elders?

Really? Scrolls? Seriously? Will the representatives from Wizards of the Coast be calling up Bethesda, because D&D is the originator of magical scrolls, and thus there might be some confusion? The series is an RPG after all. Or maybe the current residents of Alexandria can claim that profits from Skyrim should go to them because they used to have a very large collection of scrolls.

And how many casual fans even know the series title is "The Elder Scrolls"? Several people I've talked to only know the games by Morrowind, Oblivion, Skyrim, etc.

They'd have a hard time proving that "Scrolls" is being confused with Bethesda's products when many probably don't even associate that word with their games.

I agree. The only time I get confused about Bethesda's products, is when I remember they are all called "The Elder Scrolls"...a name that means virtually nothing to me. I mean, it's not even a good supertitle.. Are there any significant "scrolls" that even occur in the game? At least Star Wars is a war that takes place (often) in the Stars.. Lord of the Rings actually involves Lords and some highly significant Rings.. But does Elder Scrolls prominently feature any scrolls or elders?

I did kill quite a few elderly looking characters in the game. They didn't put up much of a fight though, so I don't know how significant that would be.

If companies want to sue people for using certain names, then they need to start making the friggin names up. You can't go around using common words that have been around forever, and then get mad at someone else when they use them too.

At some point (perhaps this one?) I have to wonder if the enormous companies act like complete bastards merely to justify their legal team overhead. Surely it's not because they get their kicks keeping the small folks down.

As I understand it (And I could be wrong) part of the problem is that Mojang trademarked the incredibly generic name "Scrolls," which is why Zeni-Max became all weird. Yes, I think its stupid but trademark law has issues. If Mojang had not trademarked "Scrolls" - I suspect the lawyers wouldn't have noticed.

[Total non-applicable asides, when trademark law is not enforced consistently you have situations like thinking you are picking up Campbell soup in the grocery store (with its red and white packaging) and you end of with the store brand by accident. Alternately you have car rental companies arguing about using "pick you up" in advertising.]

"The question is, of course, does ZeniMax have a case?" To answer this, we asked some random American about whether this would be the case in America. Then we asked, "what about Sweden?" and she said "I dunno lol". Jesus Christ.

And how many casual fans even know the series title is "The Elder Scrolls"? Several people I've talked to only know the games by Morrowind, Oblivion, Skyrim, etc.

They'd have a hard time proving that "Scrolls" is being confused with Bethesda's products when many probably don't even associate that word with their games.

I agree. The only time I get confused about Bethesda's products, is when I remember they are all called "The Elder Scrolls"...a name that means virtually nothing to me. I mean, it's not even a good supertitle.. Are there any significant "scrolls" that even occur in the game? At least Star Wars is a war that takes place (often) in the Stars.. Lord of the Rings actually involves Lords and some highly significant Rings.. But does Elder Scrolls prominently feature any scrolls or elders?

The Elder Scrolls in-game are the Prophecy MacGuffin. AFAIK they only feature notably in the very first game (which I've never played) and are basically just flavor text after that.

This reminds me of the time in the mid-70s when DEC (RIP) sued over the term "VAX", the name of its series of minicomputers. The target was a vacuum cleaner manufacturer, who had the temerity to call their product the VAX.

The judge basically said "You're a nut. Nobody's going to confuse a computer with a vacuum cleaner. Go away."

"The question is, of course, does ZeniMax have a case?" To answer this, we asked some random American about whether this would be the case in America. Then we asked, "what about Sweden?" and she said "I dunno lol". Jesus Christ.

How many Swedish lawyers do you know? Why dont you call one, ask them, translate it, and do it fast! This is journalism, and not everybody has contacts worldwide. Even if they did, the article needs to be published in a timely manner, and waiting on a contact to queue in is stupid. Get off your soap box...

This is stupid because even for stupid trademark laws, these are different products. One is a digital good and one is a physical, so the goods are not in the same business. Mojang wants the trademark for "Scrolls" card games. Bethesda does not sell a card game named the elder scrolls. There may be confusion IF Mojang tried to call their card game "Scrolls: Elder", but that's using the majority (you know over 50%) of "The Elder Scrolls" trademark name, as it stands, Scrolls is 1/3 of the name, which if one out of three generic words causes confusion to your customer, you need a new customer.

If Zenimax loses this battle and doesn't take your offer for not adding words in front, Mojang, than call your game "The New Scrolls" and really stick it to 'em.

The sad thing is this court case does have Merit, it's just stupid, stupid Merit. And Zenimax has inadvertently caused its own confusion as I'd have never (and neither would have most) linked these two games in any way what-so-ever.

At some point (perhaps this one?) I have to wonder if the enormous companies act like complete bastards merely to justify their legal team overhead. Surely it's not because they get their kicks keeping the small folks down.

The problem is, Lawyers are like a horror movie parasite for companies. If you don't have them, you will get them because coming into contact with other companies will infect them. And then when you try to get rid of them, the only thing that can get rid of a lawyer is another lawyer. So you'd have to get some lawyers to get rid of those lawyers, then your stuck with lawyers.

Mojang is looking to trademark the word "Scrolls" and they're the good guys?

Thank god trademark law isnt as horribly broken as patent law is. Filing for that would be more of a defensive move, especially for a small company like Mojang. Even if the company wasnt small, abusing the trademark system is significantly more difficult than patents. With this case, is fairly obvious. And trademark lawsuits are a lot more rare than other douchbag business strategies, like patent trolling.

My favorite trademark case is Apple. Apple Records had a trademark on Apple, and had an apple logo. Apple Computers violated that trademark knowingly, but argued they were in another market. Apple Records let the issue go, on the agreement that Apple Computers never enter the music industry. Today, Apple Computers is the largest music retailer in the world.

Whatever you do, when in an ancient biblical studies class, don't reference the Dead Sea "rolled-up papyrus thingies found in a cave", lest Bethseda's lawyers might slap ye down most righteously with furious anger. The more I know about lawyers, the more I love tarantulas, scorpions, and venemous snakes.

If Zenimax loses this battle and doesn't take your offer for not adding words in front, Mojang, than call your game "The New Scrolls" and really stick it to 'em.

The sad thing is this court case does have Merit, it's just stupid, stupid Merit. And Zenimax has inadvertently caused its own confusion as I'd have never (and neither would have most) linked these two games in any way what-so-ever.

The problem is, Lawyers are like a horror movie parasite for companies. If you don't have them, you will get them because coming into contact with other companies will infect them. And then when you try to get rid of them, the only thing that can get rid of a lawyer is another lawyer. So you'd have to get some lawyers to get rid of those lawyers, then your stuck with lawyers.

Well, I guess you will never see a video short/movie/series of the elder scrolls then. Certainly "Ninja Scroll" would have to bring up the use of scrolls in video being a trademark violation. Stupid for bethesda, Smart for bethesda lawyers (who get more work when stuff like this makes trademark issues worse).

Bethesda's not the one that filed. Zenimax is. This is a black-eye on Zenimax the publisher, not Beth. But Beth's gonna get kicked in the nuts for it nonetheless. I'm sure there's quite a few folks at Beth that are wanting to apologize to Notch for this stupidity from their publisher.

I'm definetively not a lawyer and my grip of english lawyerees is somewhat limited but here's a somewhat rough translation, for those interested.

Trademark infringement.

I write as the representative of the company ZeniMax Media Inc.

My principal creates and publishes entertainment content for among others game consoles, computers and hand held units. The company has a long and successful history and is behind several award-winning games, amongst them the world-famous game-series THE ELDER SCROLLS. The trademark THE ELDER SCROLLS is protected for among other different entertainment products and services , including computer- and video-games. Within the EU my principal is among other things possessors of the registered community trademark with registration number 2840098 and 823161.

It has come to my principals knowledge that Mojang Ltd. ("Mojang") uses the characteristic SCROLLS in its marketing of an upcoming computer- and/or video-game The characteristic SCROLLS shows significant visual, phonetic and semantic similarities with my principals trademark THE ELDER SCROLLS. These similarities are reinforced by the fact that in the entertainment business, including the computer gaming business, it is common that the products and services with a common commercial source are marketed under characteristic features derived from a common sign-element. An example is the company Nintendos world-famous Mario-series with titles such as Mario Bros and Super Mario Bros or the company Blizzards Warcraft-series with game-titles such as Warcraft: Orcs and Humans and World of Warcraft. Therefore there is an obvious risk that the average consumer gets the notion that the products and/or services provided under the characteristic SCROLLS respectively THE ELDER SCROLLS come from the same commercial origin or at least from companies with economic ties. With this background it is therefor our opinion that Mojangs use of the characteristic SCROLLS infringes my principals...

My favorite trademark case is Apple. Apple Records had a trademark on Apple, and had an apple logo. Apple Computers violated that trademark knowingly, but argued they were in another market. Apple Records let the issue go, on the agreement that Apple Computers never enter the music industry. Today, Apple Computers is the largest music retailer in the world.

This reminds me of the time in the mid-70s when DEC (RIP) sued over the term "VAX", the name of its series of minicomputers. The target was a vacuum cleaner manufacturer, who had the temerity to call their product the VAX.

The judge basically said "You're a nut. Nobody's going to confuse a computer with a vacuum cleaner. Go away."

This was, of course, a few decades before the Roomba.

VAX was also the name of the robot NPC you could recruit in the Wasteland PC game. Best NPC in that game. I sort of feel bad that I have wasted brain cells still remembering worthless, old info like that.

Already canceled my Skyrim pre-order. Minecraft was a breath of fresh air, and the industry needs people like them around. Suing independent developers into the ground over a word is absolutely insane. I refuse to buy anything from Bethesda going forward.

Already canceled my Skyrim pre-order. Minecraft was a breath of fresh air, and the industry needs people like them around. Suing independent developers into the ground over a word is absolutely insane. I refuse to buy anything from Bethesda going forward.

That was my gut reaction, too - and I'm not afraid to do something like that, even for a game I'm interested in (ref: Modern Warfare dev team fiasco - they got no money from me).

However, as Tundro Walker pointed out... this isn't Bethesda, it's their publisher. Don't punish the devs!